Kenya’s Anti-counterfeit Agency comes out with blazing guns

The seizure followed a complaint by Staedtler, the German maker of pencils of similar name. It would appear that the pencils were impounded not because of counterfeiting of the trade mark STAEDTLER rather because of the “similarity in the design, shape and colour.” The accused pencils bearing their own trade mark are manufactured in China and retail at Ksh. 10 compared to Ksh 40 for the Germany made STAEDTLER pencils.

At the same time, the Agency issued a notice to retail outlets and stores ordering them to surrender stocks of the suspect pencils in their custody. The notice warns that failure to comply with the notice could lead to criminal action being taken against the outlets in accordance with the Anti-Counterfeit Act 2008. The notice indicates that the suspect pencils infringe on international trade mark no 645587 registered under the Madrid System and designating Kenya.

The report indicates that the culprit will be taken to court. If that happens it will be interesting to find out how the Kenyan courts will address the matter more so in attempting to demarcate the sort of acts that constitute counterfeiting from the viewpoint of the Anti-counterfeiting Act and trade mark infringement from the position of the Trade Marks Act.

Incidentally, Kenya’s Anti-counterfeit Act is almost a carbon copy of the South African one. Perhaps the Kenya Court could borrow a leaf from South Africa, where as reported here by Darren, the South African Courts are trying to discourage trade mark owners from using the Anti counterfeit Act to pursue trade mark infringement disputes.

Interestingly a cursory inspection of the cited international trade mark reveals that the trade mark claims features such as the hexagonal shape of the pencil and the colours red, black, white and beige. This could be an important case to watch for a number of reasons. First, the Kenyan court could take the opportunity to debate or provide direction in relation to the scope of trade mark protection in relation to the design, shape and colour of trade marks.

Secondly, it will be interesting to watch how the courts interpret and enforce the Anti-counterfeit Act in light of the controversies that have dogged it before and after it was enacted in 2008. Noteworthy is the High Court decision that suspended application of the Act “in relation to medicine”, and in which the Judge amazingly observed that the seizure of Indian generic drugs in Europe was because of the Kenyan Act.

Thirdly, India has repeatedly complained that Kenya’s Anti-counterfeit Act is contrary to the TRIPS agreement in so far as the Act recognizes intellectual property rights subsisting in Kenya “or elsewhere”. In a sort of tongue-in-cheek proposal, can the case be used to test the efficacy of the “elsewhere” provision in that the cited Madrid system registered Trade mark “subsists elsewhere” in the sense that it was registered (elsewhere) in Geneva by WIPO?